David Kluft – Trademark and Copyright Lawhttp://www.trademarkandcopyrightlawblog.com
Foley Hoag LLPWed, 16 Jan 2019 19:48:57 +0000en-UShourly1https://wordpress.org/?v=4.9.9“Let’s Get Ready to Register!” Or not. Supreme Court Entertains Oral Argument Rumble on Copyright Circuit Splithttp://www.trademarkandcopyrightlawblog.com/2019/01/lets-get-ready-to-register-or-not-supreme-court-entertains-oral-argument-rumble-on-copyright-circuit-split/
http://www.trademarkandcopyrightlawblog.com/2019/01/lets-get-ready-to-register-or-not-supreme-court-entertains-oral-argument-rumble-on-copyright-circuit-split/#commentsThu, 03 Jan 2019 21:22:25 +0000https://www.trademarkandcopyrightlawblog.com/?p=4834Is copyright registration required before you can bring a copyright infringement suit? Everyone agrees that the answer is yes. But not everyone agrees on the definition of “registration.” That’s the question that will be under consideration by the Supreme Court at oral argument on January 8, 2019, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC.

]]>Is copyright registration required before you can bring a copyright infringement suit? Everyone agrees that the answer is yes. But not everyone agrees on the definition of “registration.” That’s the question that will be under consideration by the Supreme Court at oral argument on January 8, 2019, in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC.

Registration is not required for valid copyright ownership, but it is required if you want to bring an infringement lawsuit. Section 411(a) of the Copyright Act provides that:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.

Some courts, including the Eleventh Circuit in the underlying case of Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, interpret this language as providing that “registration” has not occurred until the Copyright Office has acted on a copyright application, by either granting it or rejecting it. This is called the “registration approach” (and sometimes the “certificate approach”).

Other courts, notably the Ninth Circuit in cases like Cosmetic Ideas, Inc. v. IAC/Interactive, follow the “application approach,” which argues that registration is complete as soon as the copyright holder delivers the required application papers and fee to the Copyright Office. In other words, you can sue for infringement right after you apply to register your copyright. There are good arguments on both sides, some of which we recounted here in an earlier post.

This dispute may seem pretty arcane, but the outcome will affect every creative industry (music, photography, film, etc.) and every potential infringer of those industries’ output. In other words, it will affect everybody. If the Supreme Court follows the “registration approach,” copyright owners will practically be required to register, as soon as possible, every work that might be pirated, lest they forfeit the ability to act quickly to stop infringement. This will be a new, expensive and time-consuming burden for many. On the other side of the equation, if the “application approach” carries the day, copyright owners (including both the legit ones and the trolls with frivolous claims) will have more leverage when making pre-litigation demands, because there will be fewer obstacles to carrying through on the threat to sue.

]]>http://www.trademarkandcopyrightlawblog.com/2019/01/lets-get-ready-to-register-or-not-supreme-court-entertains-oral-argument-rumble-on-copyright-circuit-split/feed/1Yes, We Have No More Extensions! Copyrighted Works Age Into Public Domain for First Time in Twenty Yearshttp://www.trademarkandcopyrightlawblog.com/2018/12/yes-we-have-no-more-extensions-copyrighted-works-age-into-public-domain-for-first-time-in-twenty-years/
http://www.trademarkandcopyrightlawblog.com/2018/12/yes-we-have-no-more-extensions-copyrighted-works-age-into-public-domain-for-first-time-in-twenty-years/#respondThu, 27 Dec 2018 13:00:39 +0000https://www.trademarkandcopyrightlawblog.com/?p=4829While scholars and pundits are busy listing the most important copyright rulings of 2018, a development that arguably beats them all is about to occur just as 2018 turns into 2019. On January 1, 2019, copyrighted works will start to age into the public domain for the first time in twenty years, beginning with works published in 1923.

Why did we go twenty years without anything aging into the public domain?… More

]]>While scholars and pundits are busy listing the most important copyright rulings of 2018, a development that arguably beats them all is about to occur just as 2018 turns into 2019. On January 1, 2019, copyrighted works will start to age into the public domain for the first time in twenty years, beginning with works published in 1923.

Why did we go twenty years without anything aging into the public domain? Under the 1976 Copyright Act, the maximum term of protection for a copyrighted work published before 1978 was 28 years plus a renewal period of 47 years – so effectively 75 years. On October 27, 1998, President Clinton signed into law Senate Bill S. 505 (renamed the “Sonny Bono Copyright Term Extension Act” in honor of the recently deceased singer-turned-congressman). This new law added an extra 20 years to the renewal period, pushing the maximum term for pre-1978 works to a whopping 95 years.

The practical effect was immediate. At the time the act was signed, we were just finishing up the year 1998, which was 75 years after 1923. So, works published in 1923, instead of becoming part of the public domain at the beginning of 1999, just stayed protected… for the next twenty years. Until now. At midnight on January 1, 2019, works published in 1923 will become part of the public domain by operation of law.

Ok, so what are the works? Well, the big story is not any individual work, but that the public domain generally is once again a healthy and thriving organism. If you simply must have a list, you can find some here and here. For my money, the most important works in the group are pieces by Matisse, Ernst and Duchamp. Other notable names that might get your attention include Agatha Christie, Cecil B. Demille, Buster Keaton and Jelly Roll Morton. The memorable novelty song “Yes! We Have No Bananas” is also part of the bunch.

Note that whether the above stated maximum terms apply to any particular pre-1978 work may depend on a variety of factors. Note also that different term rules apply to works created on or after January 1, 1978. For more information on copyright terms, we recommend the U.S. Copyright Office and/or the Cornell University Copyright Information Center.

]]>http://www.trademarkandcopyrightlawblog.com/2018/12/yes-we-have-no-more-extensions-copyrighted-works-age-into-public-domain-for-first-time-in-twenty-years/feed/0Second Circuit: Sales of Pre-Owned Digital Music Infringe Copyrighthttp://www.trademarkandcopyrightlawblog.com/2018/12/second-circuit-sales-of-pre-owned-digital-music-infringe-copyright/
http://www.trademarkandcopyrightlawblog.com/2018/12/second-circuit-sales-of-pre-owned-digital-music-infringe-copyright/#respondMon, 17 Dec 2018 13:20:25 +0000https://www.trademarkandcopyrightlawblog.com/?p=4827A copyright owner’s exclusive rights, codified at Section 106 of the Copyright Act, include the right to control both the reproduction and the distribution of a work. The exclusive distribution right is tempered by the “first sale doctrine,” codified at Section 109 which provides that, once you lawfully obtain a copy of something, you usually can resell the physical object (e.g., a used book) containing that copy.… More]]>A copyright owner’s exclusive rights, codified at Section 106 of the Copyright Act, include the right to control both the reproduction and the distribution of a work. The exclusive distribution right is tempered by the “first sale doctrine,” codified at Section 109 which provides that, once you lawfully obtain a copy of something, you usually can resell the physical object (e.g., a used book) containing that copy.

So how does the first sale doctrine affect your Huey Lewis and the News LP? Good question. Let’s say you purchased the album at Sam Goody in 1984, made a cassette tape copy for a friend in 1986, and then sold the LP to a used record store in 1991 (the year you became cool). The cassette tape copy was NOT permitted by the first sale doctrine, because you created a new copy, thus violating the exclusive right to reproduction, which is not affected by the first sale doctrine. On the other hand, when you resold the LP in 1991, the first sale doctrine permitted it, because at that point you were simply redistributing the physical object containing the particular copy that you had lawfully acquired back in 1984.

Bringing things forward a few years, what if you had acquired your Huey Lewis album only recently by digital download, and you wanted to resell it online? Would such a resale be more like the infringing creation of an unauthorized cassette tape copy, or more like the redistribution of a physical object (and thus protected by the first sale doctrine)? Last week, in Capitol Records v. ReDigi Inc., the Second Circuit held that the transfer of pre-owned digital music, as least as engineered by ReDigi, Inc., was more akin to an unauthorized copy, and thus a violation of the reproduction right.

The ReDigi Packet Train

ReDigi’s online platform was an attempt to create a legitimate market for the resale of pre-owned digital music. It works something like this: First, you get sick of the music you purchased online and decide you want to resell it. Second, you install ReDigi’s Music Manager software on your computer. ReDigi “migrates” the digital files you want to sell to the ReDigi server. This is done by breaking down the file into “packets.” A transitory copy of each packet is made for transfer to the ReDigi server, and each packet is deleted from your computer immediately after the transitory copy is transferred. At the end of the process, you no longer have the file on your hard drive, but it does exist in the ReDigi Cloud Locker.

In an attempt to describe this process as a physical transfer protected by the first sale doctrine, ReDigi analogized its system to a “train (the digital file) leaving from one station (the original purchaser’s device) and arriving at its destination (in the first instance, ReDigi’s server).” In this metaphor, each packet is just a car on the train. Once all the cars arrive at the destination station, the ReDigi server, they are reassembled into a usable file. From there, a second user can purchase the file; the file will once again be broken down into packets, and those packets will disappear from the ReDigi server as the train pulls into the second user’s computer and the file is reassembled at its final destination.

The Second Circuit’s Reasoning

The District Court had held that the ReDigi system infringed copyright in two ways. First, because unauthorized reproductions were made in the course of the transfer, it was a violation of the reproduction right. Second, because the files being transferred were unlawful copies, the first sale doctrine did not apply and the transfers also violated the distribution right.

The Second Circuit affirmed only on the first rationale. The Court rejected ReDigi’s argument that its system did no more than move a file from one location to another. Even putting aside the temporary transitory copies, the final outcome of the process was the fixation of a non-transitory unauthorized copy in a new material object: the ReDigi server (and then eventually on the second user’s computer). This was a violation of the reproduction right.

The Second Circuit also rejected ReDigi’s fair use argument (which ReDigi apparently made only half-heartedly, as its opening brief did not address the statutory factors). As to the first factor, the purpose and character of the use, the Court noted that ReDigi’s transfer of files was in no way transformative, as it made no change in the copyrighted work and did not deliver the work in a more convenient or usable form. Moreover, the Court held that the fourth factor, the effect on the market, weighed “powerfully” against fair use, as it was evident that ReDigi was offering a market substitute for the original.

Wiggle Room?

Does this ruling spell the death knell for efforts to create a market for pre-owned digital music? Probably in the short term. As for ReDigi, the immediate impact is the affirmance of a $3.5 million judgment and a permanent injunction against its operation of the platform.

But maybe there is still some wiggle room. After the start of the case, ReDigi created a new version of its software — ReDigi 2.0 — which no longer transfers the music file from one user to another, but rather transfers access to the music file as stored in the cloud server of the original seller (e.g., iTunes). In other words, ReDigi 2.0 arguably doesn’t make a copy so it may not infringe. The Second Circuit held that the terms of the injunction nevertheless prevent ReDigi from trying out its new platform. But because the technology has not been litigated and has not yet been found to infringe, the Court hinted that some third party could give it a try.

]]>http://www.trademarkandcopyrightlawblog.com/2018/12/second-circuit-sales-of-pre-owned-digital-music-infringe-copyright/feed/0Is Your Turkey Wishbone Protected By Copyright?http://www.trademarkandcopyrightlawblog.com/2018/11/is-your-turkey-wishbone-protected-by-copyright/
http://www.trademarkandcopyrightlawblog.com/2018/11/is-your-turkey-wishbone-protected-by-copyright/#commentsMon, 19 Nov 2018 13:19:05 +0000https://www.trademarkandcopyrightlawblog.com/?p=4811The use of a bird’s furcula, or “wishbone,” for divination purposes dates back to the ancient Etruscans, and the ritual of two people pulling on the furcula to determine who would get married first has its origins in late medieval Europe. From there, some version of the custom likely was brought to America by the pilgrims, who would have referred to the bone as a “merrythought.” Given all that history,… More]]>The use of a bird’s furcula, or “wishbone,” for divination purposes dates back to the ancient Etruscans, and the ritual of two people pulling on the furcula to determine who would get married first has its origins in late medieval Europe. From there, some version of the custom likely was brought to America by the pilgrims, who would have referred to the bone as a “merrythought.” Given all that history, the modern tradition of pulling the Thanksgiving turkey wishbone for luck is hardly original.

But what about the originality of the wishbone itself? Could a plastic wishbone sculpture, based on something found in nature, nevertheless be original enough for copyright protection? Yes, according to the Ninth Circuit in Lucky Break Wishbone Corp. v. Sears, Roebuck & Co.

“It’s Time You Got a Lucky Break”

In 1999, Ken Ahroni was sitting around the table after Thanksgiving dinner when he came up with the idea for a wishbone “for the masses so everybody, including vegetarians” would get to make a wish on Thanksgiving. Using as a model the turkey wishbone from that very meal, Ahroni started to design what was to become a “revolutionary advance in plastic wishbone technology,” the Lucky Break Wishbone.

As a first step, Ahroni had a three-dimensional scan of one side of the bone created. Then a designer worked with that scan to create a computer model of the full two-sided wishbone. From that computer model, the designer created graphite electrode models using a computer-aided cutting system. These electrodes were manually altered to achieve the right look and then used to create molds from metal blocks, which in turn were used to create a plastic wishbone prototype.

In 2005, after he created the prototype, Ahroni was approached by an advertising agency working for Sears, Roebuck & Company, which was considering using plastic wishbones for a Thanksgiving-time promotion in its department stores. Lured by the enticing prospect of a million-unit sale, Ahroni provided Sears with some sample wishbones made from his prototype molds. However, instead of purchasing wishbones from Ahroni, Sears passed on Ahroni’s samples to a Chinese manufacturer. When Thanksgiving rolled around, Sears gave out over one million plastic wishbones to its customers, all made by the Chinese company.

The Originality Analysis

In 2006, Ahroni filed suit for copyright infringement in the Western District of Washington. The most interesting issue in the case was whether a sculpture made to resemble a specific feature of avian anatomy could be the proper subject for copyright protection. In order for an author to copyright a work, the work must be original. For copyright purposes, the term “original” has two elements. First, it must be independently created, which means that the author’s contribution cannot be a mere slavish copy of something else. Second, that authorial contribution must possess some minimal degree of creativity or, as the Supreme Court once described it, “some creative spark, no matter how crude, humble or obvious.”

Sears argued that Ahroni’s Lucky Break Wishbone was no more than a plastic reproduction of a naturally occurring item, and as such could not be protected by copyright. In denying summary judgment, the District Court disagreed with Sears. The Court acknowledged that objects found in nature are in the public domain and can not be copyrighted. However, the fact that an author bases a creative work on a naturally occurring object does not preclude a finding of originality where there is evidence that the author added some creative contribution.

Here, Ahroni presented evidence that, during the various stages of the production process, the designer made several non-utilitarian aesthetic contributions to the prototype in order to create an object that was sleeker and more attractive than a natural wishbone. The goal was not to replicate the wishbone from Ahroni’s 1999 Thanksgiving, but rather to create the idealized “image of the perfect wishbone.” In further support of his argument, an expert ornithologist from the Florida Museum of Natural History opined that the Lucky Break Wishbone included seven osteological features that would not be found in nature, but rather were “of distinctly human creation or design.” These included the curve of the clavicles (i.e., the “legs”), the bilateral symmetry of the surface indentation, and certain smooth surfaces.

Based on the foregoing, the District Court held that the Lucky Break Wishbone was a work of independent authorial creation with just enough creativity to meet the “extremely low” standard for a “thin” copyright protection. The Court went on to explain that, under Ninth Circuit precedent, a defendant’s work must be “virtually identical” to the plaintiff’s work in order to infringe a “thin” copyright. Here, however, the Court felt there were genuine issues of material fact as to whether Sears’ wishbone was “virtually identical” to the Lucky Break prototype. The Court’s analysis was probably also influenced by the admission that the Chinese company was using Ahroni’s prototype as a “size reference” while designing the Sears wishbone, and by the fact that Sears also copied certain text from the product packaging of the Lucky Break product.

After summary judgment was denied, the case eventually went to trial. The jury saw things pretty much the same way and awarded Ahroni approximately $1.7 million in damages. In 2009, the Ninth Circuit affirmed.

Thanks to Ken Ahroni and Lucky Break Wishbone for letting us use some of their photographs for this post. You can still get a Lucky Break Wishbone at http://www.luckybreakwishbone.com/.

]]>http://www.trademarkandcopyrightlawblog.com/2018/11/is-your-turkey-wishbone-protected-by-copyright/feed/3Frankenstein and Copyright: 5 Things You Should Knowhttp://www.trademarkandcopyrightlawblog.com/2018/10/frankenstein-and-copyright-5-things-you-should-know/
http://www.trademarkandcopyrightlawblog.com/2018/10/frankenstein-and-copyright-5-things-you-should-know/#commentsTue, 23 Oct 2018 12:30:51 +0000http://www.trademarkandcopyrightlawblog.com/?p=4794The first edition of Frankenstein, or The Modern Prometheus, was published in 1818, two hundred years ago. Originally offered to the public as an anonymous work, Frankenstein was both the apogee of the gothic horror novel and the birth of the science fiction genre.

]]>The first edition of Frankenstein, or The Modern Prometheus, was published in 1818, two hundred years ago. Originally offered to the public as an anonymous work, Frankenstein was both the apogee of the gothic horror novel and the birth of the science fiction genre.

The public did not learn until years later that this masterpiece had been penned by Mary Wollstonecraft Shelley. Shelley had written the work on a rainy day in 1816, when she was only nineteen. Incredibly, twenty-year-old John Polidori was simultaneously inventing the vampire genre just down the hall in the same Geneva villa.

The actual publication date of the first edition was January 1, 1818, but the Halloween season is as good a time as any to commemorate the two-hundredth anniversary of Frankenstein and its relationship to copyright law. Here are five things you should know.

Shelley sold the Frankenstein copyright for £30.

The first edition of Frankenstein was printed by the London publishing house of Lackington & Co., which agreed to give Shelley one-third of the profits from a 500 copy run. Shelley’s share came to about £41.

In 1823, the first stage version of Frankenstein (called Presumption, or The Fate of Frankenstein) was produced by Richard Peake. Shelley reportedly enjoyed the play, but her approval wasn’t important, because at the time she had no rights to assert against it. The year before, her buddy Lord Byron had gone to court to enjoin an unauthorized theatrical version of one of his own works, only to be told by the King’s Bench (in Murray v. Elliston), that the play was a “fair abridgment” of his work over which he had no say. Notwithstanding the state of the law, Shelley’s family was able to take advantage of the publicity surrounding Peake’s play to print and sell a revised second edition of Frankenstein.

In 1831, publishers Henry Colburn and Richard Bentley asked Shelley to create a third edition for their “Standard Novels” series, and this is the version with which we are most familiar today. Among the most prominent changes was a new introduction explaining how the novel was conceived, a revised backstory for Elizabeth, and the introduction of galvanism as the possible agent of resurrection.

Colburn and Bentley’s request for these revisions appears to have been motivated in part by the desire to create a brand new work in which they could own the copyright. In fact, some scholars have suggested that this classic version of Frankenstein may never have come into being but for the incentives and prohibitions of copyright law. Shelley transferred the copyright in the third edition to Colburn and Bentley for £30, the last money she would ever see from the book.

The monster is in the public domain, but not the one you are picturing.

Shelley’s description of the monster was of an outsized 8-foot tall man with lustrous black hair, white teeth and tight yellow skin. The illustration to the 1831 edition, a big naked guy with really good abs, remains more or less faithful to that description. The popular depiction of the monster began to change when Edison Studios produced the first film version of Frankenstein in 1910 and introduced a fully clothed but disheveled fiend with white makeup and an Edward Scissorhands vibe.

But when I say “Frankenstein,” you are not thinking of any of those early depictions. The flat-topped, neck-bolted monster we know and love was born in 1931, when Boris Karloff starred in Universal Pictures’ film version of Frankenstein, directed by James Whale. Sure, the copyright in the original Frankenstein story had already fallen into the public domain, but by then Universal’s movie (and sequels and derivative works) resurrected a whole new era of Frankenstein copyright and trademark rights based on the film’s visuals, especially Karloff’s appearance as fixed on celluloid.

We haven’t found any published opinions pertaining to Universal’s enforcement of these rights, but there are lots of anecdotes out there. Other Frankenstein film and comic book franchises have reportedly gone to great lengths to design around the Karloff look. In 1971, a Shasta soda ad supposedly had to be reshot because the makeup artist created something too close to the Karloff monster. And as recently as 2010, the author of the poster book Electric Frankenstein reported getting a cease and desist letter warning him to stay away from the combination of five visual elements that make up the Universal character’s appearance: bolts, green skin, big forehead, scar, and flat-top.

I know what you’re thinking: how did Herman Munster get away with it all those years? Easy … Universal owns him too.

Bread good . . . Fire bad.

In the 1980’s, E.J. Novak and Debra Studer created the “Video Vault,” a series of comedy sketches in which veteran talk show host Joe Franklin conducted various impossible interviews with historical and literary characters. Frankenstein’s monster appeared in one segment (alongside the Wicked Witch). The monster greeted the host with “Joe Franklin – Friend – Joe Franklin – good,” and didn’t say much more after that except “Grrrr.” In August 1985, Novak and Studer submitted an unsolicited demo tape to Saturday Night Live.

A couple years later, Saturday Night Live featured a skit called “Succinctly Speaking,” a parody talk show in which Nora Dunn interviewed Tarzan (Kevin Nealon), Tonto (Jon Lovitz), and Frankenstein’s monster (the late great Phil Hartman). In response to some simple questions, the monster answered “Bread Good” and “Fire Bad,” but then he growled and stormed off the set when asked for his views on the INF treaty.

Novak and Studer sued NBC and others for this and similar alleged copying of their work. The Southern District of New York granted summary judgment for NBC on most of the claims, including those pertaining to the “Succinctly Speaking” skit. The Court observed that the only similarities between the works were (a) the basic idea, which was not protectable; and (b) stock elements that were as a practical matter indispensable for a particular topic (and thus, under the scénes á faire doctrine, not the proper subject for a copyright action).

Although the Frankenstein skit was out of the case, certain other claims hung around for a couple more years (one involving a mafia character played by Don Novello a/k/a Father Guido Sarducci). Novak and Studer, acting pro se, used their court filings as an opportunity to hone their comedy skills. Among other things, they insisted on referring to opposing counsel as “Laurel and Hardy.” Judge Robert Sweet found this behavior “not only unseemly and unfunny, but intended to harass” and eventually sent the plaintiffs packing with a dismissal and a $3,500 sanctions penalty.

Big Frank’s got a lot of heart.

M.H. Segan, a Massachusetts toy company, pitched its “Frankenstuff” plush toy concept to Hasbro in 1986. Frankenstuff was “a somewhat friendly looking juvenile Frankenstein’s monster whose chest and head can be zipped open to reveal all kinds of interesting and fun toys and goodies.” Alongside the familiar green skin, square head and neck bolts, Frankenstuff had a babyish face, a purple robe and large hands. When you unzipped the chest cavity, you saw a red heart with two green and yellow gears comprising a clockwork-like mechanism.

Hasbro rejected the idea, but then in 1993 it introduced “Big Frank,” a talking plastic toy in a bright orange suit with a babyish face, big hands, green skin and square head. His chest had a door built in to it; when you opened it, you saw a plastic clockwork-like heart mechanism featuring blue and yellow gears.

Segan filed suit for copyright infringement in the Southern District of New York. On a motion for summary judgment, Hasbro argued that Segan’s Frankenstuff copyright was invalid because it was derivative of the Universal version of the monster and, unlike Hasbro, Segan did not have a license from Universal. The Court acknowledged that there were many similarities between Segan’s design and Universal’s property, but held that there were disputed issues of material fact as to whether Frankenstuff was truly derivative of Universal’s design, or merely “stirred one’s memory” of that design. The Court also held that summary judgment was not appropriate as to whether Frankenstuff and Big Frank were substantially similar to each other, as there were more than de minimis substantial similarities in protected expression, in particular the heart mechanism.

Frankenstein saved your VCR!

Finally, remember that time Frankenstein’s monster saved your VCR? Ok, that’s a bit of an exaggeration, but the monster was right there in the middle of one of the Supreme Court’s most important fair use cases.

By 1976, consumers had started to discover the joys of home video, and were using Sony Betamax devices to record their favorite programs from broadcast television. Universal (and other movie studios) filed a copyright case alleging that, by making this consumer copying possible, Sony was secondarily liable for massive copyright infringement.

In order to bring a case for secondary infringement, the movie studios had to prove some primary infringement. Towards that end, the plaintiffs presented evidence of five consumers who, although not themselves defendants, were the primary infringers for whose acts Sony was allegedly secondarily liable. One of these consumers was Marc Wielage, who purchased a Sony Betamax 7200 so he could tape his favorite Universal monster movies, such as Frankenstein, House of Frankenstein and Son of Frankenstein, and watch them at a time of his convenience.

The California Central District Court held that Wielage’s copying amounted to non-commercial “time-shift” viewing of material made available over the public airwaves, and was therefore a fair use. The Ninth Circuit reversed, and the case made it all the way to the Supreme Court. In Sony Corp. v. Universal City Studios, a 5-4 decision, the Supreme Court agreed with the District Court that the sale of home video recorders to the public did not constitute secondary infringement because the underlying challenged use of the devices, unauthorized home time-shift viewing, was fair use.

Unfortunately for Frankenstein fans, the individual examples of consumer infringers didn’t make it into Justice John Paul Steven’s majority opinion. However, Justice Stevens understood that his decision was not only saving the home recording industry generally, but specifically making the world safe for Marc Wielage’s Betamax copy of Bride of Frankenstein.

]]>http://www.trademarkandcopyrightlawblog.com/2018/10/frankenstein-and-copyright-5-things-you-should-know/feed/1MoMA and New York City Shut Down Trademark Infringing Eateries on the Same Dayhttp://www.trademarkandcopyrightlawblog.com/2018/10/moma-and-new-york-city-shut-down-trademark-infringing-eateries-on-the-same-day/
http://www.trademarkandcopyrightlawblog.com/2018/10/moma-and-new-york-city-shut-down-trademark-infringing-eateries-on-the-same-day/#respondTue, 09 Oct 2018 16:25:24 +0000http://www.trademarkandcopyrightlawblog.com/?p=4780Disputes over restaurant trademarks are not exactly rare. However, we couldn’t help noticing that on September 28, 2018, injunctions issued hours apart in two restaurant name disputes involving high profile New York marks.

City of New York v. Tavern on the Green

The iconic Tavern on the Green restaurant in Central Park is owned by the City of New York, but has been operated by concessionaires since it opened in 1934.… More

]]>Disputes over restaurant trademarks are not exactly rare. However, we couldn’t help noticing that on September 28, 2018, injunctions issued hours apart in two restaurant name disputes involving high profile New York marks.

City of New York v. Tavern on the Green

The iconic Tavern on the Green restaurant in Central Park is owned by the City of New York, but has been operated by concessionaires since it opened in 1934. In 1978, one of those concessionaires filed a federal trademark application for TAVERN ON THE GREEN for restaurant services. A Court found that the application contained a number of false and misleading in a number of respects, including its failure to disclose that the mark was only licensed – not owned – by the applicant. These falsehoods went unnoticed at the time, but they came to the fore decades later in the context of the concessionaire’s bankruptcy petition. In 2010, the Southern District of New York ordered the registration canceled, but then rescinded that order and instead had ownership of the registration transferred to the City.

A successor concessionaire emerged from the bankruptcy and, in 2011, entered into a new agreement with the City under which it could keep using the mark for restaurants outside New York, and for other products such as cooking oil, as long as it did not (among other things) trade on the goodwill of the original Central Park location. The parties both used the mark until 2017, when the City filed a new suit alleging that the concessionaire was breaching the agreement by making repeated references to “Central Park” and allusions to the “culinary experience of New York City’s famous restaurant.”

On September 28, 2018, the Southern District of New York granted summary judgment for the City on its breach of contract and trademark claims. The Court has yet to determine the scope of the injunction or the City’s entitlement to damages, and the City’s state law claims are still pending.

Museum of Modern Art v. MOMACHA IP

Even before you could eat at Tavern on the Green, you could see paintings at New York’s Museum of Modern Art, which first opened its doors in 1929. The museum has been known worldwide as the “MoMA” for about fifty years, and has offered restaurant and café services under that name since 1993. It registered the MOMA trademark in 2003.

In April 2018, an entity called MoMaCha opened a café on Manhattan’s Lower East Side. MoMaCha displayed its name using a font and color scheme similar to that used by the museum, and even featured a modern art gallery on the premises. MoMA was in court before the end of the month, asking for an injunction against MoMaCha’s alleged infringement.

On September 28, 2018, the Southern District of New York granted the museum’s request for a preliminary injunction after a review of the Polaroid likelihood of confusion factors. The Court found that the MOMA mark was strong (notwithstanding the existence of the SFMOMA and MoCA museum marks) because it had acquired secondary meaning and because it was arbitrary, at least as to café services. The parties’ respective marks were similar and so were their services: both parties displayed art and offered café services in New York City. MoMaCha’s attempts to argue that the parties operated in unrelated spheres were not helped by its own social media accounts, which used hashtags like #modernart and #museum in association with its name.

The museum was also able to point to multiple anecdotal instances of actual confusion, including one consumer who opined that trying the new MoMaCha latte would be a great excuse to visit the museum. Another incident was even more to the point: a consumer posted a Yelp! review for MoMaCha stating: “thought it was affiliated with the moma.”

MoMaCha argued that a preliminary injunction was inappropriate because, after the lawsuit was filed, it had changed its logo to a new style (resembling a stencil pattern) and started using all capital letters, and because it now accompanied the logo with a disclaimer. The Court was unmoved by this argument because MoMaCha was still using the original style on social media, because the new style also bore similarities to the MoMA mark, and because there was no evidence that the disclaimers had eliminated consumer confusion.

The preliminary injunction prohibits MoMaCha from displaying the name “MoMaCha” or otherwise exploiting the MOMA mark, and from using the momacha.com domain name, during the pendency of the proceedings.

When does the globally available website of a foreign company subject that company to jurisdiction in the United States for purposes of a trademark infringement action? Does it make a difference if the foreign company has applied for a United States trademark registration? In Plixner International v. Scrutinizer GmbH, the First Circuit was reluctant to adopt any rules of general applicability,… More

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When does the globally available website of a foreign company subject that company to jurisdiction in the United States for purposes of a trademark infringement action? Does it make a difference if the foreign company has applied for a United States trademark registration? In Plixner International v. Scrutinizer GmbH, the First Circuit was reluctant to adopt any rules of general applicability, but did determine that the globally accessible website in question subjected the defendant to personal jurisdiction in any U.S. federal court, including the District of Maine.

Scrutinizer v. Scrutinizer

Scrutinizer is a German company doing business in Germany. It runs an English language interactive website, called a “self-service platform,” for analyzing software. You upload your source code to Scrutinizer, which scrutinizes it for bugs and security vulnerabilities. Scrutinizer requires payment in Euros only, and its customer contracts provide for exclusive jurisdiction in German courts in the event a dispute arises. Scrutinizer provides services globally and has 156 customers in the United States, mostly in California, from which it has earned a total of under €200,000. However, it conducts no advertising in the United States, has no servers or offices in the U.S., and its employees have never set foot here on business.

Scrutinizer might sound like a company that does business far away from Maine, but it wasn’t far enough away for Plixner International, a Maine company that owns the registered federal trademark SCRUTINZER for software analysis services. Plixner brought a trademark infringement action against Scrutinizer in the District of Maine. The German company moved to dismiss for lack of personal jurisdiction.

The Personal Jurisdiction Analysis

The District of Maine decided, and the First Circuit affirmed, that personal jurisdiction was appropriate pursuant to Federal Rule of Civil Procedure 4(k)(2), which provides that a party is subject to jurisdiction in U.S. federal courts if:

The cause of action arises under federal law (e.g., the Lanham Act);

The defendant is not subject to the personal jurisdiction of any state court of general jurisdiction (e.g., a foreign company); and

The federal court’s exercise of personal jurisdiction comports with due process.

The only disputed prong was the third one. The question under that prong was whether the German company had sufficient minimum contacts with the United States. Where the allegation is specific jurisdiction, as here, the Court goes through a second three-prong analysis:

Relatedness: Whether the claim directly arises out of the forum activities;

Purposeful Availment: Whether the defendant’s contacts with the U.S. represented a purposeful availment of the privilege of conducting business here, thus invoking the benefits and protections of the forum’s laws and making it foreseeable that the defendant would end up in a U.S. Court; and

Reasonableness: Whether the exercise of jurisdiction is reasonable.

Scrutinizer conceded the first prong, relatedness, because the allegation was that the trademark was being used in connection with in-forum activity.

As to the second prong, purposeful availment, the First Circuit noted that this was a “close call” (including because of the Euros-only restriction and the lack of U.S. advertising) but ultimately held that Scrutinizer had purposefully availed itself of U.S. law and the U.S. courts because:

Although simply making a website available to U.S. consumers is not enough by itself for jurisdiction, here Scrutinizer used the website in connection with “sizeable and continuing commerce with United States customers.”

No intervening actor dictated the location of Scrutinizer’s customers by injecting the service into a “stream of commerce” and out of Scrutinizer’s control. Rather, Scrutinizer had control over what business it accepted.

Scrutinizer could have – but did not – design its website so as to deny or limit access to U.S. customers.

After designing the website, Scrutinizer knowingly served U.S. customers for three and a half years and took no action to stop that activity, thus demonstrating that its U.S. contacts were “voluntary.”

After the litigation began, the German company filed an application to register its SCRUTINIZER mark in the United States. The Court acknowledged that, in most cases, post-complaint activity is irrelevant to a personal jurisdiction analysis. Here, while the action of filing the application did not “tip the scales,” it was a further indication of Scrutinizer’s “desire to deal with the U.S. Market.”

As to the third prong, reasonableness, the Court acknowledged the burden of litigating across the Atlantic, but failed to see how this was a “special or unusual” burden for Scrutinizer, particularly where it was clear that the United States had a reasonable interest in the adjudication of a U.S. trademark.

The District of Maineopinion is worth a read for its frank and cogent overview of how various appellate courts have addressed the issue of personal jurisdiction based on online activity, and how those courts might have treated the facts of this case.

]]>http://www.trademarkandcopyrightlawblog.com/2018/10/first-circuit-affirms-personal-jurisdiction-based-on-global-web-activity-in-trademark-action/feed/1Copyright Office Finds “Ballooned Droplet” is Really Just a Fat Apostrophehttp://www.trademarkandcopyrightlawblog.com/2018/09/copyright-office-finds-ballooned-droplet-is-really-just-a-fat-apostrophe/
http://www.trademarkandcopyrightlawblog.com/2018/09/copyright-office-finds-ballooned-droplet-is-really-just-a-fat-apostrophe/#commentsMon, 17 Sep 2018 12:30:47 +0000http://www.trademarkandcopyrightlawblog.com/?p=4747In theory, a corporate logo should stand just as good a chance at being eligible for copyright registration and protection as any other kind of visual art. Section 913.1 of the Compendium of U.S. Copyright Office Practices expressly provides that a logo may be registered if it satisfies “the requisite qualifications for copyright,” that is, if it “embodies some creative authorship in its delineation and form.”

]]>In theory, a corporate logo should stand just as good a chance at being eligible for copyright registration and protection as any other kind of visual art. Section 913.1 of the Compendium of U.S. Copyright Office Practices expressly provides that a logo may be registered if it satisfies “the requisite qualifications for copyright,” that is, if it “embodies some creative authorship in its delineation and form.”

But in practice, getting a logo registered for copyright protection can be tough. Many of the characteristics of well-known corporate logos don’t figure into the Copyright Office’s analysis at all, such as consumer recognition, commercial success, artistic merit and symbolic meaning. Additionally, many of the design elements most typical of corporate logos are deemed by the Compendium to be insufficiently creative, such as common shapes, typographical symbols (e.g., the symbols on your QWERTY keyboard) and simple color variations.

The Vodafone “SpeechMark”

Vodafone’s “Speechmark” logo ran into several of these obstacles. Originally designed for Vodafone by the Saatchi & Saatchi advertising firm, the logo (which was reportedly meant to symbolize voice communications) was introduced to the public in 1997. In about 2017, Vodafone sought trademark and copyright protection for the Speechmark in the United States. The logo was described in Vodafone’s trademark application as “a red apostrophe sign inside a white circle,” and it was registered earlier this year by the U.S. Patent and Trademark Office.

The copyright application didn’t fare as well. The registration specialist found that the logo design contained only a de minimis degree of creativity because it consisted of nothing more than two common shapes (a circle and a square), a single letter of text (the apostrophe), and a couple “trivial” color and shading choices.

Vodafone appealed to the Copyright Office Review Board (CORB). On appeal, Vodafone argued (apparently contradicting its trademark application) that the symbol at the center of the logo was not an “apostrophe” at all; rather, it was a “ballooned droplet” that was “readily distinguishable from an apostrophe, both in the stylization of its curvature and its orientation.”

CORB was not impressed by this argument. First, the orientation of the symbol didn’t matter because, whichever way it faced, it was a mere typographical symbol: an apostrophe if facing one way and a open quotation mark if facing the other way. Second, even though the symbol was “slightly more bulbous” than a typical apostrophe or quotation mark, CORB found that it was nevertheless “instantly recognizable” as one.

CORB also agreed that the remaining elements, including a common circle and square, two colors and some minor shading, were not eligible for copyright protection. Neither was the combination and arrangement of these elements: simply nesting the shapes and symbols within each other was not considered sufficiently creative by CORB.

You can read CORB’s opinion letter here, and you can see a neat video here about the evolution of the Vodfone Speechmark logo.

]]>http://www.trademarkandcopyrightlawblog.com/2018/09/copyright-office-finds-ballooned-droplet-is-really-just-a-fat-apostrophe/feed/1“Forest of Light” Trade Dress Claim Nixed; Trademark Claim Surviveshttp://www.trademarkandcopyrightlawblog.com/2018/08/forest-of-light-trade-dress-claim-nixed-trademark-claim-survives/
http://www.trademarkandcopyrightlawblog.com/2018/08/forest-of-light-trade-dress-claim-nixed-trademark-claim-survives/#respondMon, 20 Aug 2018 12:30:57 +0000http://www.trademarkandcopyrightlawblog.com/?p=4724Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation? If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v.…More]]>Picture yourself at dusk along the river, walking through a massive outdoor art installation featuring tens of thousands of individually-placed spheres of light on short stalks, reminiscent of blooming flowers. Ok, now stop and answer this: what kind of intellectual property would you use to protect this installation? If you answered “trade dress,” you get a frowny-face sticker, at least according to the Eighth Circuit’s recent opinion in Munro v. Lucy Activewear.

Background

Bruce Munro is a UK-based artist who, since 2004, has been creating installations such as the “Forest of Light,” which delighted hundreds of thousands of Philadelphia-area residents at Longwood Gardens in 2012. Following the success of that exhibit, Munro received calls from other entities interested in his work, including the city of Boston and the VF Corporation, owner of Lucy Activewear. Munro mentioned to VF that he was also in talks with Boston. Soon after making this disclosure, however, Munro stopped receiving calls from VF and from Boston.

In October 2013, VF launched a Lucy Activewear-branded light installation along the Charles River Esplanade in Boston. VF named the installation “Light Forest.” Like Munro’s work, it featured tens of thousands of individually-placed lights on short stalks, arranged in an outdoor green space in a manner reminiscent of glowing flowers.

Munro filed a complaint in state court in Texas (where he conducts business activities), alleging violations of the Lanham Act and several state law counts (such as fraud, tortious interference and common law unfair competition). VF removed the case to federal court, after which it was transferred to the District of Minnesota, which is where the “Light Forest” installation was created by VF’s advertising agency.

Trade Dress Claim Precluded

Munro’s intellectual property case was premised in large part on the alleged copying of his trade dress. He argued that this trade dress consisted of large-scale outdoor exhibits with thousands of light “stalks” arrayed and arranged in green spaces, positioned off-kilter or splayed, and topped with variably lit bulbs.

The Eighth Circuit, affirming the dismissal of this claim by the District Court, held that this was not the proper subject for trade dress protection. The Court relied on the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp (which we have discussed in more detail here and here). According to Dastar, the Lanham Act was not designed to protect originality or creativity (which is the exclusive domain of copyright), nor does it create a cause of action for plagiarism. So, for example, you can bring a Lanham Act claim over confusion as to the source of the object consumers are purchasing, but you can’t bring a Lanham Act Claim over mere confusion as to who first came up with the idea embodied in the object.

Here, the Eighth Circuit held that the gravamen of Munro’s “trade dress” claim was not that consumers were confused as to the source of any object, but that VF “basically plagiarized his creative designs.” These creative designs were not a “trade dress” serving to identify the source of a product; the designs were the product itself. Thus, the Court held, if Munro had any intellectual property claim at all, it would have to sound in copyright.

So why didn’t Munro bring a copyright claim? Neither the opinions of the courts nor the parties’ briefs address that issue, but we can speculate. Munro doesn’t appear to manufacture the light “stalks” or the bulbs himself, so presumably he couldn’t seek protection for any individual component of his design (and since light fixtures are often considered useful articles, perhaps even their manufacturer could not get such protection). Nor does copyright protect ideas. In theory, then, the only copyright protection available would consist of Munro’s selection and arrangement of the non-copyrightable stalks and bulbs. Even if such protection were granted, perhaps in the category of 3-D sculptural work, the copyright would be difficult to enforce against any copy-cat installation that did not substantially replicate the precise selection and arrangement that was protected.

Trademark Claim Reinstated

It was not all bad news for Munro. He had also asserted trademark claims based on the similarity between the name of his installation, “Forest of Light,” and the name of VF’s Boston installation, “Light Forest.” Munro argued that VF’s use of a similar name was likely to cause confusion as to Munro’s creation of or affiliation with the exhibit.

At the motion to dismiss stage, the District Court held that this was a “closer question,” but dismissed the claim anyway because Munro had “not provided facts suggesting that the name Forest of Light served a source-identifying function.” Instead, the District Court held, the name merely served to identify Munro as the artist, i.e., the source of an idea but not the source of a product or service.

The Eighth Circuit disagreed and reversed the dismissal of this part of the case. In some situations, the Court held, the producer of a creative idea and the person selling the product made with that idea are the same, and in those situations a Lanham Act claim may be appropriate to protect the association between the artist/producer and the work/product. Here, Munro properly alleged that he created and marketed large-scale light installations under the name “Forest of Light.” This was a sufficient allegation that the name “Forest of Light” serves a source-identifying function.

The Eighth Circuit also affirmed dismissal of Munro’s state law claims on the grounds that they were preempted by copyright law and/or failed to state a claim.

]]>http://www.trademarkandcopyrightlawblog.com/2018/08/forest-of-light-trade-dress-claim-nixed-trademark-claim-survives/feed/0UEFA Starball “Curves” and “Illusions” Bounced by Copyright Officehttp://www.trademarkandcopyrightlawblog.com/2018/08/4719/
http://www.trademarkandcopyrightlawblog.com/2018/08/4719/#commentsMon, 13 Aug 2018 14:53:54 +0000http://www.trademarkandcopyrightlawblog.com/?p=4719The “Starball” logo of the Union des Associations Européennes de Football (“UEFA”) consists of a round ball made up of black stars, with white polygons in the negative space between the stars. In 2016, UEFA filed an application with the United States Copyright Office to register the Starball as a work of two-dimensional visual art. The Copyright Office was not impressed and, on July 30,… More]]>The “Starball” logo of the Union des Associations Européennes de Football (“UEFA”) consists of a round ball made up of black stars, with white polygons in the negative space between the stars. In 2016, UEFA filed an application with the United States Copyright Office to register the Starball as a work of two-dimensional visual art. The Copyright Office was not impressed and, on July 30, 2018, the Copyright Office Review Board (“CORB”) affirmed denial of registration. Here are UEFA’s four arguments for registration, and why the Copyright Office shot down each one.

Look at those curves!

Familiar geometric shapes, such as stars, are not subject to copyright protection. UEFA argued that there was nothing “familiar” about the Starball stars, since they are irregularly curved in order to fit within the overall round shape of the ball. CORB disagreed and held that, even with the curves, the stars (and the polygons too) were recognizably familiar shapes that were insufficiently creative. Citing Section 906.1 of the Compendium of U.S. Copyright Office Practices, CORB further held that the overall combination of these familiar shapes demonstrated only a de minimis level of creativity that did not warrant copyright protection (similar to the Compendium’s example of a simple collection of white circles on a purple background).

A few good shapes

The Copyright Office also refused registration in part because Section 905 of the Compendium provides that “merely bringing together only a few standard forms or shapes with minor linear or spatial variations” does not exhibit a sufficient amount of creative expression. UEFA argued that this standard did not apply because the Starball was made up more than a “few” shapes. Rather, it consisted of no less than nineteen elements (I actually count twenty). CORB chided UEFA for “narrowly focusing” on the word “few” while ignoring the rest of Section 905, which provides that “works that consist entirely of uncopyrightable elements” will not be registered unless their selection and arrangement is sufficiently creative. According to CORB, shoving nineteen (or twenty) common shapes into the circumference of a circle was not creative.

Inapposite cases

UEFA argued that the refusal of registration for the Starball was inconsistent with a bunch of federal district court opinions regarding other works consisting of geometric shapes. For example, in Hoberman Designs v. Gloworks Imps., the Central District of California held that the use of combined geometric shapes in the Hoberman Mini Sphere toy could be eligible for copyright protection. CORB distinguished each of the cases cited by UEFA on the grounds that they involved three-dimensional shapes, distinctive color schemes, and/or other “creative additions.”

The World of Illusion

Finally, UEFA argued that the Starball deserved copyright protection “because the stars and polygons are positioned to create the illusion of a three-dimensional sphere.” UEFA claimed that this illusion “is keenly important in that it shows that the placement of the elements are not linear; and in order to create the illusion, the elements had to be placed with more than just minor spatial variation” (just for fun, trying reading that again to yourself in a Doug Henning voice). But CORB was not interested in speculating about the importance of an “illusion” on the mind of the viewer. Citing to Section 310.3 of the Compendium, CORB held that in determining eligibility for copyright protection, it would only consider the objective appearance of the Starball; not the “symbolic meaning or impression” that a work supposedly evokes in the mind of a viewer.